The Coming Agent Shake Out?

With the College of Patent Agents and Trademark Agents expected to become operational soon, it is timely to review some trademark agent appointment statistics.

CIPO Addresses the Backlog

On 3 May 2021 CIPO released 2 Practice Notices to address “current wait times at the examination stage”.  The Notices deal with Requests for expedited examination and Measures to improve timeliness in examination.  Ominously, the measures include the prospect of increased refusals by CIPO.

CIPO’s Top Madrid Users

The Canadian Intellectual Property Office (CIPO) started accepting Madrid Protocol trademark registrations designating Canada less than 2 years ago, but Canada has already become a top destination for such filings.  That’s both good and bad news.

CIPO’s examination backlog—the Madrid effect

A backlog of trademark applications awaiting initial substantive examination by CIPO has developed over the past few years.  Can the backlog be quantified, apart from anecdotal evidence?  Yes it can—by working with CIPO’s trademark .xml data.

Union Labels

Union labels were introduced by An Act to amend the Trade Mark and Design Act (1927) 17 George V c. 71.  Only 14 examples—just 2 of which are currently active—remain in CIPO’s online trademark database and .xml data, this being one of them (see TMDA42786):

General vs. Specific Marks

In An Act respecting Trade Marks and Industrial Designs (1879) 42 Vict. c. 22, Canada required “The proprietor of a trade mark applying for its registration [to] state in [the] application whether the said trade mark...is intended to be used as a general trade mark or as a specific trade mark¹.”  That distinction was dropped from the application requirements set forth² in the Unfair Competition Act (1932) 22-23 George V c. 38 (the successor to 42 Vict. c. 22).  However, the Unfair Competition Act grandfathered the distinction for previously registered marks³ as did the current statute⁴.  The distinction accordingly lives on—well over a century later—in 136 general marks and 1,709 specific marks which are currently active on the Canadian trademarks register (as of 05-Apr-2021).

Working With CIPO’s ‘Delete’ Files

CIPO’s weekly trademark .xml data releases often include a so-called ‘delete’ file in addition to the weekly ‘update’ file(s).  By processing each week’s ‘delete’ file one can easily stay in sync with CIPO’s online trademark database.  In contrast, it is more cumbersome to stay in sync with CIPO’s online patent database.

Where are the Agents?

CIPO’s online trademark database does not expose trademark agent details as searchable fields.  To investigate such details one must use CIPO’s .xml data, as I will demonstrate in this post.

Nurses!? What about Kinsmen / Canadian Clubs?

CIPO’s “Mark Protected by Federal Act of Incorporation” category

The Help file associated with the Canadian Intellectual Property Office’s online trademark database contains a section headed The various categories of marks.  One such category (as of 22-Mar-2021) is Mark Protected by Federal Act of Incorporation as shown in the Help file extract below:

The reference to an Act to Incorporate the Canadian Nurses Association appears to be an anachronism that should be removed from the Help file.

Accelerated (expedited) Search and Examination

In its 14-Dec-2020 “Requests for expedited examination” Practice Notice CIPO explains that it “...does not currently grant requests to examine trademark applications out of order”.  The Notice then outlines an exception for “...applications associated with medical goods or services related to COVID-19”.  Does the data tell us anything about expedited examination?

NIDS objections—does the data help?

If you inspect any of CIPO’s 1.7 million trademark .xml files—even for a mark initially protected under the Trade Mark and Design Act (1868) 31 Vict., c. 55 or under the Unfair Competition Act (1932) 22-23 Geo. V, c. 38—you will discover that the file contains a tmk:TradeDistinctivenessIndicator element encapsulating either the word “true” or the word “false”.

How current is the data?

If you work with CIPO’s trademark .xml data—or with CIPO’s online trademark database—you may encounter situations in which you need to know the exact date of the most recent event details represented in the data—or in the online database.

Montreal or Montréal? ETL and data cleansing

If you click the Agent Rankings By City tab at the top of this page, then scroll down, you will find not one but four separate tabulations for: Montreal, Québec; Montreal, Quebec; Montréal, Quebec; and Montréal, Québec.  Why isn’t there just one tabulation combining those four city / province combinations as shown below (click to enlarge the image)?

Prosecution Events

Users of CIPO’s online trademark database will be familiar with the Action History that appears upon inspection of any “hit” returned by searching the database.  You can’t search Action History events via the online database, but you can do powerful event-based searches by working with the .xml data.

Mark Categories & Classes (the tmk:MarkCategory and catmk:TrademarkClass elements)

CIPO exposes only a limited number of categories and classes of marks via the online trademark database.  You can uncover many more by working with the .xml data.